NOTE TO THE FILE
Sent to TICRS as Serial Number: 87674403SERIAL NUMBER: 87674410
DATE: 02/21/2018
NAME: lkolodner
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:From: Anna Jakobsson [mailto:anna.jakobsson@sandvik.com]
Sent: Wednesday, February 21, 2018 10:00 AM
To: Kolodner, Louis <Louis.Kolodner@USPTO.GOV>
Subject: RE: US Trademark Applications: IMPERIUM (87674403); and CENTURION (87674410)
Hi Lou:
Thank you for your email. I just spoke with the business folks and they have advised that “machines” is not an accurate term to be used in connection with the goods. The goods, namely, “blast hole roller cone drill bits” are used in the mining industry. The goods are generally called in the industry roller cone drill bits. These can be used in mining and oilfield applications. We added “blast hole” to clarify that our specific products under these marks are used in the mining industry. While “equipment” would be an acceptable addition, I assume this is not acceptable. I tried to explain to Business that you want to make sure the goods are not for handheld uses that would fall in a different class. However, I understand that by their nature and by industry usage and definition, it is clear, from the description we use, that the relevant goods cannot be used for handheld purposes. I believe that the addition “for rock drilling” clarifies this. I therefore ask that you will reconsider and accept “blast hole roller cone drill bits for rock drilling,” particularly in view of the acceptable ID term “drill bits for rock drilling.”
Please let me know your thoughts. Thank you for your help!
Best regards,
ANNA JAKOBSSON, ESQ.
GROUP LEGAL COUNSEL, TRADEMARKS & BRAND RELATED IP
Sandvik AB
Kungsbron 1, Section G, Floor 6, 111 22 Stockholm, SWEDEN
Tel: +46 8 726 63 77 or +46 70 616 28 36
ROCKTECHNOLOGY.SANDVIK
From: Kolodner, Louis [mailto:Louis.Kolodner@USPTO.GOV]
Sent: Tuesday, February 20, 2018 1:42 PM
To: Anna Jakobsson <anna.jakobsson@sandvik.com>
Subject: RE: US Trademark Applications: IMPERIUM (87674403); and CENTURION (87674410)
Good Morning Ms. Jakobsson:
How about “Blast hole roller drill bits for rock drilling machines”.
Kind regards,
/Lou Kolodner/
Louis Kolodner
Trademark Examining Attorney
United States Patent and Trademark Office
Law Office 122
Email: Louis.Kolodner@uspto.gov
Phone: (571) 272-7562
From: Anna Jakobsson [mailto:anna.jakobsson@sandvik.com]
Sent: Friday, February 16, 2018 8:49 AM
To: Kolodner, Louis <Louis.Kolodner@USPTO.GOV>
Subject: RE: US Trademark Applications: SCOOP (87607707); TRINITY (87613867); TRIFORCE (87631274); V-GUARD (87631278); IMPERIUM (87674403); and CENTURION (87674410)
Hi Lou:
Thank you for your call the other day. I was wondering if we could add “…for rock drilling” instead of “..for drilling machines.” I see that drill bits for rock drilling is an acceptable term in the ID manual. The amended ID would then read “blast hole roller cone drill bits for rock drilling.” If acceptable, please issue the examiner’s amendments for IMPERIUM (87674403) and CENTURION (87674410).
I look forward to hearing from you. Thank you for your help!
Best regards,
ANNA JAKOBSSON, ESQ.
GROUP LEGAL COUNSEL, TRADEMARKS & BRAND RELATED IP
Sandvik AB
Kungsbron 1, Section G, Floor 6, 111 22 Stockholm, SWEDEN
Tel: +46 8 726 63 77 or +46 70 616 28 36
ROCKTECHNOLOGY.SANDVIK
From: Kolodner, Louis [mailto:Louis.Kolodner@USPTO.GOV]
Sent: Wednesday, February 14, 2018 9:18 PM
To: Anna Jakobsson <anna.jakobsson@sandvik.com>
Subject: RE: US Trademark Applications: SCOOP (87607707); TRINITY (87613867); TRIFORCE (87631274); V-GUARD (87631278); IMPERIUM (87674403); and CENTURION (87674410)
Good Afternoon Ms. Jakobsson:
It appears that for some of the above referenced applications the assignment still created an entity-type issue in that the new owner has LLC in the name but the entity type is “corporation” instead of “limited liability company”. I have asked the processors if they can process all the assignments so that I can then reach back out to you and we can make the changes by Examiner’s Amendment.
I don’t think it will take more than a few days. I will contact you once they are all through so we can do the Examiners Amendments and move the applications forward.
Kind regards,
/Lou Kolodner/
Louis Kolodner
Trademark Examining Attorney
United States Patent and Trademark Office
Law Office 122
Email: Louis.Kolodner@uspto.gov
Phone: (571) 272-7562
From: Anna Jakobsson [mailto:anna.jakobsson@sandvik.com]
Sent: Wednesday, February 14, 2018 4:54 AM
To: Kolodner, Louis <Louis.Kolodner@USPTO.GOV>
Subject: RE: US Trademark Applications: SCOOP (87607707); TRINITY (87613867); TRIFORCE (87631274); V-GUARD (87631278); IMPERIUM (87674403); and CENTURION (87674410)
Hi Lou:
I note that our application for V-GUARD Serial No. 87/631,278 was recently approved for publication. This is one of the applications that were included in the name change recordal. I was therefore wondering if you could issue the Examiner’s Amendment with respect to SCOOP (87/607,707); TRINITY (87/613,867); and TRIFORCE (87/631,274). If you would prefer for me to file responses online, just let me know. Thank you for your help.
Best regards,
ANNA JAKOBSSON, ESQ.
GROUP LEGAL COUNSEL, TRADEMARKS & BRAND RELATED IP
Sandvik AB
Kungsbron 1, Section G, Floor 6, 111 22 Stockholm, SWEDEN
Tel: +46 8 726 63 77 or +46 70 616 28 36
ROCKTECHNOLOGY.SANDVIK
From: Kolodner, Louis [mailto:Louis.Kolodner@USPTO.GOV]
Sent: Tuesday, January 30, 2018 7:15 PM
To: Anna Jakobsson <anna.jakobsson@sandvik.com>
Subject: RE: US Trademark Applications: SCOOP (87607707); TRINITY (87613867); TRIFORCE (87631274); V-GUARD (87631278); IMPERIUM (87674403); and CENTURION (87674410)
Good Afternoon Ms. Jakobsson:
Thank you for giving me the update on where things stand with these applications.
It sometimes takes a few days (or even weeks) for changes to come through the system. Once the applications appear in the system on my end, I will review what has been submitted and get in touch with you about next steps.
Kind regards,
/Lou Kolodner/
Louis Kolodner
Trademark Examining Attorney
United States Patent and Trademark Office
Law Office 122
Email: Louis.Kolodner@uspto.gov
Phone: (571) 272-7562
From: Anna Jakobsson [mailto:anna.jakobsson@sandvik.com]
Sent: Tuesday, January 30, 2018 4:36 AM
To: Kolodner, Louis <Louis.Kolodner@USPTO.GOV>
Subject: RE: US Trademark Applications: SCOOP (87607707); TRINITY (87613867); TRIFORCE (87631274); V-GUARD (87631278); IMPERIUM (87674403); and CENTURION (87674410)
Dear Lou:
We have updated the record to indicate the conversion and change of name from Varel International Ind., L.P. to Varel International Ind., LLC (Reel/Frame 6246/0515). Since the only outstanding issue for SCOOP (87/607,707); TRINITY (87/613,867); and
TRIFORCE (87/631,274) involved clarification as to the entity type of Applicant, is it possible to resolve these office actions via an Examiner’s Amendment?
As to the request for an amendment of the ID for IMPERIUM (87/674,403); and CENTURION (87/674,410), I was wondering if the clarification and amendment to read “blast hole roller CONE drill bits” would be acceptable. The term roller cone bits is a commonly used term in the oil and gas industry. The below links show that not only Applicant, but other companies in the industry also use the term to describe a certain category of product.
http://www.vareloilandgas.com/index.php/en/roller-cone-bits
http://www.slb.com/services/drilling/drill_bits/type/roller_cone.aspx
http://www.halliburton.com/en-US/ps/drill-bits/roller-cone.page
http://petrowiki.org/Roller_cone_bit_design
The term has also been accepted in connection with several of Applicant’s prior registrations, for example, Reg. Nos. 4481558, 4543865, 4481557, 4543864, 4543863, 4481556, 4543862, etc. If the proposed amendment is acceptable, please let me know if you could issue Examiner’s Amendments accordingly.
I look forward to hearing from you. Thank you for your help.
Best regards,
ANNA JAKOBSSON, ESQ.
GROUP LEGAL COUNSEL, TRADEMARKS & BRAND RELATED IP
Sandvik AB
Kungsbron 1, Section G, Floor 6, 111 22 Stockholm, SWEDEN
Tel: +46 8 726 63 77 or +46 70 616 28 36
ROCKTECHNOLOGY.SANDVIK
From: Kolodner, Louis [mailto:Louis.Kolodner@USPTO.GOV]
Sent: Tuesday, January 02, 2018 12:26 PM
To: Anna Jakobsson <anna.jakobsson@sandvik.com>
Subject: RE: US Trademark Applications: SCOOP (87607707); TRINITY (87613867); TRIFORCE (87631274); V-GUARD (87631278); IMPERIUM (87674403); and CENTURION (87674410)
Good Morning Ms. Jakobsson:
Thank you for getting back to me. No apology necessary, it was holiday time so I knew there was a good chance I would not hear back.
I look forward to your responses.
Kind regards,
/Lou Kolodner/
Louis Kolodner
Trademark Examining Attorney
United States Patent and Trademark Office
Law Office 122
Email: Louis.Kolodner@uspto.gov
Phone: (571) 272-7562
From: Anna Jakobsson [mailto:anna.jakobsson@sandvik.com]
Sent: Tuesday, January 02, 2018 3:14 AM
To: Kolodner, Louis <Louis.Kolodner@USPTO.GOV>
Subject: FW: US Trademark Applications: SCOOP (87607707); TRINITY (87613867); TRIFORCE (87631274); V-GUARD (87631278); IMPERIUM (87674403); and CENTURION (87674410)
Importance: High
Dear Lou:
I apologize for not responding sooner. We will respond to the now issued office actions.
Happy New Year!
Best,
Anna
Anna Jakobsson, Esq.
Office: +46 8 726 63 77
Cell: +46 70 616 28 36
Address: Sandvik AB, Box 510, 101 30 Stockholm, Sweden
Visiting Address: Sandvik AB, Kungsbron 1, Section G, Floor 6, 111 22 Stockholm, Sweden
From: trademarks
Sent: Friday, December 22, 2017 3:46 PM
To: Anna Jakobsson <anna.jakobsson@sandvik.com>
Subject: FW: US Trademark Applications: SCOOP (87607707); TRINITY (87613867); TRIFORCE (87631274); V-GUARD (87631278); IMPERIUM (87674403); and CENTURION (87674410)
Importance: High
Hej Anna,
Se nedan.
//Camilla
From: Kolodner, Louis [mailto:Louis.Kolodner@USPTO.GOV]
Sent: den 22 december 2017 15:43
To: trademarks <trademarks@sandvik.com>
Subject: RE: US Trademark Applications: SCOOP (87607707); TRINITY (87613867); TRIFORCE (87631274); V-GUARD (87631278); IMPERIUM (87674403); and CENTURION (87674410)
Good Afternoon:
I am writing to follow up on the email I sent Wednesday and the voicemail I left yesterday.
Please let me know if you are amenable to the Examiner’s Amendment described below.
Kind regards and happy holiday season.
/Lou Kolodner/
Louis Kolodner
Trademark Examining Attorney
United States Patent and Trademark Office
Law Office 122
Email: Louis.Kolodner@uspto.gov
Phone: (571) 272-7562
From: Kolodner, Louis
Sent: Wednesday, December 20, 2017 3:26 PM
To: 'trademarks@sandvik.com' <trademarks@sandvik.com>
Subject: US Trademark Applications: SCOOP (87607707); TRINITY (87613867); TRIFORCE (87631274); V-GUARD (87631278); IMPERIUM (87674403); and CENTURION (87674410)
Good Afternoon Ms. Jakobsson:
I am the attorney from the United States Patent and Trademark Office assigned to examine the above-referenced U.S. Trademark Applications. I tried to leave a voicemail a few minutes ago but I was not successful.
I have searched the Office’s database of registered and pending marks and have found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d). However, there are issues with the applications that need to be addressed before it can move forward towards publication. If you are amenable, the issues described below can be addressed by Examiner’s Amendment and/or combined Examiner’s Amendment/Priority Action.
ALL APPLICATIONS – Composition of the Limited Partnership – Examiner’s Amendment
The applications state the owner of the marks is Delaware Limited Partnership. As such it requires a “composed of” statement. If accurate, are you willing to add the following statement to the record (taken from TOTALLEACH, Reg. No. 4481558)
Varel International Ind., L.P., is a limited partnership organized under the laws of Delaware, composed of Varel GP Newco, LLC, a Delaware Limited Liability Company.
IMPERIUM (87674403) and CENTURION (87674410) - Amended Identification of Goods – Examiner’s Amendment
If accurate are you willing to amend the identification of goods to read as follows:
Blast hole roller power drill bits
V-GUARD - Amended Mark Description, Classification of Goods, and Payment for Additional Class – Examiner’s Amendment/Priority Action
The goods “Metal matrix powder for drill bits for earth boring drilling tools and equipment” belongs in Class 6 not in class 7 because the powder is not a structural part of the tools or equipment. If accurate, are you willing to amend the identification to read as follows:
Class 6: Metal matrix powder for drill bits for earth boring drilling tools and equipment
Class 7: Drill bits for earth boring drilling tools and equipment
Adding Class 6 will require you to pay for the additional class of goods.
With your authorization, I can enter the amendments myself by Examiner's Amendment and move the applications forward. You can authorize the proposed Examiner's Amendments and combined Examiner’s Amendment/Priority Action by return email or by calling me at the number below.
Entering the required amendments in this manner would eliminate the need for issuance of a formal Office Action and for filing of a formal Response to Office Action.
If I do not hear from you by close of business on Friday, December 22, I will issue an Office Action requiring the amendments and you will have six months to respond either in writing or via telephone if an Examiner’s Amendment is an appropriate response at that point.
If I can answer any questions or be of any assistance, please do not hesitate to contact me.
Best regards,
/Lou Kolodner/
(571) 272-7562
Louis Kolodner
Trademark Examining Attorney
United States Patent and Trademark Office
Law Office 122
Email: Louis.Kolodner@uspto.gov
Phone: (571) 272-7562
This e-mail is confidential and it is intended only for the addressees. Any review, dissemination, distribution, or copying of this message by persons or entities other than the intended recipient is prohibited. If you have received this e-mail in error, kindly notify us immediately by telephone or e-mail and delete the message from your system. The sender does not accept liability for any errors or omissions in the contents of this message which may arise as a result of the e-mail transmission.
This e-mail is confidential and it is intended only for the addressees. Any review, dissemination, distribution, or copying of this message by persons or entities other than the intended recipient is prohibited. If you have received this e-mail in error, kindly notify us immediately by telephone or e-mail and delete the message from your system. The sender does not accept liability for any errors or omissions in the contents of this message which may arise as a result of the e-mail transmission.
This e-mail is confidential and it is intended only for the addressees. Any review, dissemination, distribution, or copying of this message by persons or entities other than the intended recipient is prohibited. If you have received this e-mail in error, kindly notify us immediately by telephone or e-mail and delete the message from your system. The sender does not accept liability for any errors or omissions in the contents of this message which may arise as a result of the e-mail transmission.
This e-mail is confidential and it is intended only for the addressees. Any review, dissemination, distribution, or copying of this message by persons or entities other than the intended recipient is prohibited. If you have received this e-mail in error, kindly notify us immediately by telephone or e-mail and delete the message from your system. The sender does not accept liability for any errors or omissions in the contents of this message which may arise as a result of the e-mail transmission.
This e-mail is confidential and it is intended only for the addressees. Any review, dissemination, distribution, or copying of this message by persons or entities other than the intended recipient is prohibited. If you have received this e-mail in error, kindly notify us immediately by telephone or e-mail and delete the message from your system. The sender does not accept liability for any errors or omissions in the contents of this message which may arise as a result of the e-mail transmission.